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Under circumstances where a registered trademark is the same as a registered name of another party, if third-party confusions are deliberately caused by seeking trademark registration of a name which has been registered by another company and by operating the same business as that of such company, although such other company cannot seek remedies pursuant to the trademark act, still the right of name of such other company should be protected under the principle of good faith, and certainly a motion may be filed to eliminate infringement in accordance with article 19 of the Civil Code (Taiwan)

The Supreme Court rendered the 103-Tai-Shang-2158 Ruling on October 16, 2014 (hereinafter, the "Ruling"), citing the opinion of the original trial court and holding that although the acquisition of exclusive trademark rights under the Trademark Act follows the doctrine of registration, when a registered trademark is identical to a registered name of another party, if third-party confusions are deliberately caused by seeking trademark registration of a registered name of another company and by operating the same business of such other company, the right of name of such other company should still be protected under the principle of good faith, even though such other company cannot seek remedies pursuant to the Trademark Act. A motion can certainly be filed to eliminate the infringement in accordance with Article 19 of the Civil Code.

According to the facts underling the Ruling, the original trial court found in its decision that the two companies have the same names of "Taiwan Antrodia Camphorata", which is a specially selected portion, and the same organization type. The only difference is merely the additional word "international" marked at the end of "Taiwan Antrodia Camphorata" in the Appellant's name by the Appellant. The Appellee asserted that the Appellant infringed its right of name and filed a motion to compel the Appellant not to use "Taiwan Antrodia Comphorata International Co., Ltd." as its name in accordance with Article 19 of the Civil Code. After the original court found in its decision that the assertion was well-grounded, the Appellant appealed to the Supreme Court.

It was pointed out in the Ruling that a name is a linguistic mark which differentiates an individual from others to ensure the consistency of the individual. The legal significance and functions of a company name also lie in differentiating the identity of a company, focusing on the accumulation of goodwill and on corporate image. A trademark represents the sources and quality of goods or services, and the provisions of the Trademark Act seek to protect trademarks rather than the right of name of a person. Therefore, the Trademark Act does not exclude the application of Civil Code to the infringement upon the right of name of natural or juridical persons. Thus, although the acquisition of trademark exclusive rights under the Trademark Act follows the doctrine of registration, when a registered trademark is identical to a registered name of another party, if third-party confusions are deliberately caused by seeking trademark registration of a registered company name of another company and by operating the same business of such other company, the right of name of such other company should still be protected under the principle of good faith, even though such other company cannot seek remedies pursuant to the Trademark Act. A motion can certainly be filed to eliminate the infringement in accordance with Article 19 of the Civil Code. It was further determined that the original trial court decision did not have any violation of laws and regulations, and that the Appellant's appeal was rejected for being unlawful.

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